UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Unified Patents, LLC,

Petitioner,

v.

MasterObjects, Inc., Patent Owner.

Case IPR2020-01201 Patent 10,311,073

PATENT OWNER’S PRELIMINARY RESPONSE UNDER 37 C.F.R. § 42.107 TO PETITION FOR INTER PARTES REVIEW

OF U.S. PATENT NO. 10,311,073

Mail Stop “PATENT BOARD” Patent Trial and Appeal Board U.S. Patent and Trademark Office P.O. Box 1450 Alexandria, VA 22313-1450

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EXHIBIT LIST

Petitioner’s Exhibits

Exhibit Description EX1001 U.S. Patent No. 10,311,073 to Smit (“the ’073 patent”) EX1002 Declaration of Dr. Harley Myler EX1003 Curriculum Vitae of Dr. Harley Myler EX1004 Prosecution History of U.S. Patent No. 10,311,073 EX1005 U.S. Publication No. 2005/0283468 to Kamvar et al.

(“Kamvar”) EX1006 U.S. Publication No. 2006/0122976 to Baluja et al. (“Baluja”) EX1007 U.S. Patent No. 6,704,727 to Kravets (“Kravets”) EX1008 U.S. Publication No. 2007/0130131 to Porter et al. (“Porter”) EX1009 U.S. Patent No. 5,873,076 to Barr et al. (“Barr”) EX1010 U.S. Patent Application Serial No. 09/933,493 filed August 20,

2001 EX1011 U.S. Patent Application Serial No. 11/257,912 filed October

25, 2005 EX1012 U.S. Patent No. 7,752,326 to Smit EX1013 U.S. Provisional Application Serial No. 60/252,273 to Porter et

al. (“Porter Provisional”) EX1014 Petitioner’s Voluntary Interrogatory Responses

Patent Owner’s Exhibits

Exhibit Description EX2001 Affidavit in Support of Motion for Pro Hac Vice Admission of

Alden G. Harris EX2002 Curriculum Vitae of Dr. Michael J. Pazzani EX2003 MasterObjects v. Facebook Preliminary Infringement

Contentions EX2004 U.S. Patent App. No. 09/494,818 by Kravets EX2005 IAM Interview with Judge Alan Albright EX2006 MasterObjects v. Facebook Complaint for Patent Infringement EX2007 MasterObjects v. Amazon Complaint for Patent Infringement EX2008 MasterObjects v. Facebook Preliminary Invalidity Contentions EX2009 MasterObjects v. Amazon Preliminary Invalidity Contentions

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EX2010 Unified Patents Website Advertising Members EX2011 Unified Patents Website “Join” Page EX2012 Unified Patents Website “FAQ” Page EX2013 Unified Patents Website “Success” Page EX2014 Unified Patents IPRs as of Sept. 19, 2020 EX2015 Unified Patents IPR Challenges of Patents Asserted Against

Facebook and Amazon as of Sept. 19, 2020 EX2016 University of Central Florida Library Webpage for “A medial

axis transformation language for recognizing aircraft silhouettes using a genetic search technique”

EX2017 “The History of Search Engines” Webpage EX2018 Harley R. Myler, Arthur Robert Weeks, Jill Laura Hooper-

Giles, “Novel approach to aircraft silhouette recognition using genetic algorithms,” Proc. SPIE 1699, Signal Processing, Sensor Fusion, and Target Recognition (9 July 1992)

EX2019 Placeholder EX2020 U.S. Patent Application No. 12/176,984 by Smit EX2021 Excerpt from Abraham Silberschatz, Peter Baer Galvin, Greg

Gagne, “Operating System Concepts,” Sixth Edition, 2003 EX2022 HTML IFRAMES Definition from w3schools.com EX2023 MasterObjects v. Facebook MasterObjects Opening Claim

Construction Brief EX2024 MasterObjects v. Facebook Facebook Opening Claim

Construction Brief EX2025 Unified Patents Website Advertising Members EX2026 MasterObjects v. Facebook MasterObjects Responsive Claim

Construction Brief EX2027 MasterObjects v. Facebook Facebook Responsive Claim

Construction Brief EX2028 Declaration of Dr. Michael J. Pazzani EX2029 Declaration of Leslie V. Payne in support of Preliminary

Response

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TABLE OF CONTENTS

I.  Introduction ...................................................................................................... 1 II.  Summary of the Argument .............................................................................. 1 III.  Background ...................................................................................................... 2 

A.  State of the Art ...................................................................................... 2 B.  The ’073 Patent Invention ..................................................................... 2 C.  Related Matters ...................................................................................... 4 

IV.  Legal Standards ............................................................................................... 4 V.  Level of Ordinary Skill in the Art ................................................................... 5 VI.  Claim Construction .......................................................................................... 7 

A.  Cache ..................................................................................................... 7 B.  Asynchronous ........................................................................................ 7 C.  Incomplete Search Query ...................................................................... 8 

VII.  Argument ....................................................................................................... 10 A.  The Challenged Claims are entitled to a priority date no later

than August 20, 2001 .......................................................................... 10 B.  Ground 1: No Claims are Obvious based on Kamvar and a

POSITA’s Knowledge ......................................................................... 22 1.  Kamvar is not prior art .............................................................. 22 2.  Claim [1d]: “matching, by the server system, the string

to entries in a cache of query strings and search results based on content queries received from multiple users, whereby cached search results contain a subset of data from one or more content sources”; .......................................... 23 

3.  Claim [1f]: “sending, by the server system to the client computer prior to completion of the search query at the client, a message containing information identifying the incomplete search query and at least a portion of the search result data that identifies the content in a content source”; ......................................................................... 27 

4.  Claim [1g]: “asynchronously receiving, on the client computer, without loading another web page and while the user is entering the content search query into the field, the message [from the server system], and” .............. 28 

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5.  Claim [6]: “The method of claim 1, further comprising sending, by the server system to the client computer, a message containing updated search result data in response to asynchronously receiving, from the client computer, a string representing an updated version of the search query.” ...................................................................... 30 

C.  Ground 2: No Claims are Obvious based on Kamvar in view of Baluja .............................................................................................. 30 1.  Kamvar and Baluja are not prior art ......................................... 30 2.  Petitioner has not asserted that Claim 1 is invalid under

Ground 2 ................................................................................... 31 3.  Claim [9]: “The method of claim 8, wherein retrieving

search result data comprises: sending one or more content inquiries to one or more respective content sources; and receiving content data in response to the one or more content inquiries.” ................................................. 33 

4.  Claim [10]: “The method of claim 9, wherein at least a portion of the content data is stored in the cache after receiving it from the one or more respective content sources.” .................................................................................... 34 

D.  Ground 3: No Claims are Obvious based on Kravets in view of Porter and Barr ................................................................................ 34 1.  Porter is not prior art ................................................................. 34 2.  Petitioner has not asserted its grounds for invalidity

with particularity. ...................................................................... 39 3.  Claim [1a]: “A method, comprising: detecting, on a

client computer, entry of a content search query into a field on a web page by a user”; ................................................. 39 

4.  Claim [1d]: “matching, by the server system, the string to entries in a cache of query strings and search results based on content queries received from multiple users, whereby cached search results contain a subset of data from one or more content sources”; .......................................... 40 

5.  Claim [1f]: “sending, by the server system to the client computer prior to completion of the search query at the client, a message containing information identifying the incomplete search query and at least a portion of the search result data that identifies the content in a content source”; ......................................................................... 43 

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6.  Claim [1g]: “asynchronously receiving, on the client computer, without loading another web page and while the user is entering the content search query into the field, the message [from the server system], and” .............. 45 

7.  Claim [1h]: “displaying at least a portion of the search result data on the client computer and enabling the user to retrieve additional content data corresponding to the search result.” ............................................................................ 47 

8.  Claim [9]: “The method of claim 8, wherein retrieving search result data comprises: sending one or more content inquiries to one or more respective content sources; and receiving content data in response to the one or more content inquiries.” ................................................. 48 

9.  Claim [10]: “The method of claim 9, wherein at least a portion of the content data is stored in the cache after receiving it from the one or more respective content sources.” .................................................................................... 49 

E.  The Board should deny institution under § 314(a) ............................. 49 F.  Petitioner failed to disclose all real parties-in-interest ........................ 54 

1.  Unified’s business model .......................................................... 57 2.  Unified’s interest in the IPRs .................................................... 58 3.  Whether Unified takes client interests into account

when filing IPRs........................................................................ 59 4.  Facebook relationship with RPX .............................................. 60 5.  Facebook’s interest in and benefit from the IPRs ..................... 61 6.  Whether Unified is representing Facebook’s interest ............... 61 7.  Whether Facebook actually desired review of the

patent ......................................................................................... 61 8.  Overlapping board members ..................................................... 62 9.  Communications between Unified and Facebook .................... 62 10.  RPI Analysis ............................................................................. 63 

VIII.  Conclusion ..................................................................................................... 63 

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TABLE OF AUTHORITIES

Cases 

Apple Inc. v. Fintiv, Inc. IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20, 2020) .......................... 50, 52, 53

Apple Inc. v. Fintiv, Inc. IPR2020-00019, Paper 15 (P.T.A.B. May 13, 2020) ....................................... 49

Apple Inc. v. MPHTechnologies OY, IPR2019-00820, Paper 37 (P.T.A.B. Sept. 24, 2020) ....................................... 32

Applications in Internet Time, LLC v. RPX Corp. 897 F.3d 1336 (Fed. Cir. 2018) ........................................................... 54, 55, 63

Arendi S.A.R.L. v. Apple Inc. 832 F.3d 1355 (Fed. Cir. 2016) ........................................................................ 24

Ariosa Diagnostics v. Verinata Health, Inc. 805 F.3d 1359 (Fed. Cir. 2015) ........................................................................ 53

Blue Calypso, LLC v. Groupon, Inc. 815 F.3d 1131 (Fed. Cir. 2016) ......................................................................... 21

Cuozzo Speed Techs., LLC v. Lee 136 S. Ct. 2131 (2016) ...................................................................................... 49

Dynamic Drinkware, LLC v. Nat’l Graphics, Inc. 800 F.3d 1375 (Fed. Cir. 2015) ............................................................. 4, 13, 34

eBay Inc. v. MasterObjects, Inc. IPR2017-00740, Paper 8 (P.T.A.B. July 27, 2017) ............................................ 8

Function Media, L.L.C. v. Google Inc. 708 F.3d 1310 (Fed. Cir. 2013) ........................................................................ 36

General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha IPR2016-01357, Paper 19 (P.T.A.B. Sept. 6, 2017) ....................................... 49

Harmonic Inc. v. Avid Tech., Inc. 815 F.3d 1356 (Fed. Cir. 2016) ................................................................... 4, 33

In re Giacomini 612 F.3d 1380 (Fed. Cir. 2010) ........................................................................ 35

In re Gordon 733 F.2d 900 (Fed. Cir. 1984) .......................................................................... 26

In re Magnum Oil Tools Int’l, Ltd. 829 F.3d 1364 (Fed. Cir. 2016) ......................................................................4, 5

In re Mills 916 F.2d 680 (Fed. Cir. 1990) .......................................................................... 26

viii

In re NuVasive, Inc. 842 F.3d 1376 (Fed. Cir. 2016) .......................................................................... 5

In re Ratti 270 F.2d 810 (C.C.P.A. 1959) ............................................................................ 5

In re Warsaw Orthopedic, Inc. 832 F.3d 1327 (Fed. Cir. 2016) .......................................................................... 5

Intex Recreation Corp. v. Team Worldwide Corp. IPR2018-00859, Paper 128 (P.T.A.B. Oct. 21, 2019) ...................................... 35

Koninklijke Philips N.V. v. Google LLC 948 F.3d 1330 (Fed. Cir. 2020) ..................................................... 24, 25, 32, 45

Lockwood v. Am. Airlines, Inc. 107 F.3d 1565 (Fed. Cir. 1997) ........................................................................ 14

Masterobjects, Inc. v. Ebay, Inc. No. 3:12-cv-680 JSC, 2013 U.S. Dist. LEXIS 47001 (N.D. Cal. 2013) ............ 8

MasterObjects, Inc. v. Google, Inc. No. C 11-1054 PJH, 2013 U.S. Dist. LEXIS 74767 (N.D. Cal. 2013) .............. 8

MasterObjects, Inc. v. Yahoo!, Inc. No. C 11-02539 JSW, 2013 U.S. Dist. LEXIS 168296 (N.D. Cal. 2013) ......... 8

NHK Spring Co. Ltd. v. Intri-Plex Techs. Inc. IPR2018-00752, Paper 8 (P.T.A.B. Sept. 12, 2018) ........................................ 49

Palo Alto Networks, Inc. v. Packet Intelligence LLC No. 19-CV-02471-WHO, 2020 WL 5760475 (N.D. Cal. Sept. 28, 2020) ....... 51

Phillips v. AWH Corp. 415 F.3d 1303 (Fed. Cir. 2005) .......................................................................... 7

Plas-Pak Indus. v. Sulzer Mixpac AG 600 F. App’x 755 (Fed. Cir. 2015) ................................................................... 43

PowerOasis, Inc. v. T-Mobile USA, Inc. 522 F.3d 1299 (Fed. Cir. 2008) ........................................................................ 13

RPX Corporation v. Applications in Internet Time, LLC IPR2015-01750, Paper 128 (P.T.A.B. October 2, 2020) .......................... passim

Sundance, Inc. v. Demonte Fabricating Ltd. 550 F.3d 1356 (Fed. Cir. 2008) ........................................................................... 6

Tech. Licensing Corp. v. Videotek, Inc. 545 F.3d 1316 (Fed. Cir. 2008) ........................................................................ 13

Williamson v. Citrix Online, LLC 792 F.3d 1339 (Fed. Cir. 2015) ........................................................................ 36

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Statutes 

35 U.S.C. § 112 ................................................................................................. 21, 35 35 U.S.C. § 112(f) .................................................................................................... 36 35 U.S.C. § 312(a)(2) ............................................................................................... 54 35 U.S.C. § 312(a)(3) ....................................................................................... passim 35 U.S.C. § 314(a) ................................................................................................... 30 35 U.S.C. § 314(b) ................................................................................................... 52 35 U.S.C. § 315(e) ................................................................................................... 51 35 U.S.C. § 316(a)(11) ............................................................................................. 52 35 U.S.C. § 316(b) ................................................................................................... 53

Other Authorities 

MPEP § 2143.01 ........................................................................................................ 5 Regulations 

37 C.F.R. § 42.100(b) ................................................................................................ 7 37 C.F.R. § 42.65(a) ................................................................................................. 28

1

I. Introduction

Patent Owner MasterObjects, Inc. (“MasterObjects” or “PO”) respectfully

requests that the Board refuse to institute inter partes review of U.S. Patent No.

10,311,073 (“the ’073 Patent”) because Petitioner Unified Patents, LLC (“Unified”

or “Petitioner”) has not shown a reasonable likelihood of prevailing on claims 1-2

and 4-12 of the ’073 Patent. In addition, the Board should not consider the Petition

(Paper 1, “Pet.”) because it is duplicative of ongoing litigation regarding the same

Patent and because Petitioner has failed to identify all real parties in interest.

II. Summary of the Argument

The ’073 Patent is entitled to its August 20, 2001 priority date. This means all

three of Petitioner’s grounds fail because Kamvar, Baluja, and Porter are not prior

art. The Petition is also fatally defective because Unified Patents filed it on behalf of

its member Facebook (and likely on behalf of Amazon as well), but did not list these

entities as real parties in interest. This action therefore duplicates ongoing litigation

in which both Facebook and Amazon have raised the exact same invalidity defenses

as Unified, expressly incorporating Unified’s Petition into their invalidity

contentions.

If the Board reaches the merits of the Petition, many failures of proof will

become apparent. The most dramatic of these is that Dr. Harley Myler does not meet

his own definition of a POSITA, making him unqualified to offer opinions. As such,

2

Unified’s arguments and opinions are often conclusory and unsupported by any

analysis. They are simply assertions that a reference teaches things the reference

itself never mentions. A Petitioner cannot meet its burden this way.

Procedurally and substantively, there is no reason to think Unified’s validity

challenges could succeed. The Petition should be denied.

III. Background

A. State of the Art

From the earliest days, Internet search has been hampered by the “request-

response loop.” The user would type a query, click “submit” or “search,” wait for

the query to be sent to a server, wait for the results to be obtained by the server, wait

for the server to build a page, wait for the page to load, and then wait for the client

window to be redrawn to view the results. In this “request-response loop,” if the

result set did not match user expectations, the entire process was repeated iteratively.

B. The ’073 Patent Invention

In 1999 and 2000, Mark Smit (inventor of the ’073 Patent) was a young

computer scientist working on relational databases and complex document search

and retrieval issues for a company near Amsterdam. He found the technology

frustrating and slow and thought he could do better.

To that end, he founded his new company, MasterObjects, to develop better

search technology. By Autumn of 2000, Mr. Smit had invented a new search

3

paradigm—a way to provide instant search results as the user typed. His technique

used asynchronous communication between the user’s computer and the search

server. In the old model, the communication was “synchronous,” i.e., the server

would wait until the user hit submit, whereupon the server would do its work and

return results. As the client worked, the server waited; as the server responded, the

client waited.

To break this “request-response loop,” Mr. Smit needed a new, asynchronous

way to communicate, i.e., the server and the client could each communicate on their

own timetables rather than each waiting until the other was finished.

Mr. Smit also envisioned storing common prior search queries and results in

a cache for rapid retrieval. This caching, along with asynchronous communication,

allowed the system to quickly associate a few characters of a new request with a set

of previous queries and provide corresponding results quickly. For example, a user

searching for an indoor arena in Manhattan types, “mad” becomes “madi,” then later

“madison sq,” and then out pops search results for “madison square garden.” As the

user types a query, the server provides increasingly relevant information (e.g.,

information relating to Mad Magazine, then James Madison, then Madison Square

Garden). This provides useful search results much faster than prior systems.

4

C. Related Matters

There are two pending cases involving the ’073 Patent: (1) MasterObjects,

Inc. v. Facebook, Inc., Case No. 6:20-cv-00087 (W.D. Tex.), and (2) MasterObjects,

Inc. v. Amazon.com, Inc., Case No. 1:20-cv-03478 (S.D.N.Y.). Other patents in the

same family as the ’073 Patent were involved in the proceedings identified in PO’s

Mandatory Notices (Paper 5). Markman briefing filed in the pending Facebook case

is attached as EX2023-24, EX2026-27.

IV. Legal Standards

An IPR should not be instituted unless Petitioner has shown a likelihood of

success on the invalidity grounds presented in the petition. See In re Magnum Oil

Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (“[T]he Board must base its

decision on arguments that were advanced by a party, and to which the opposing

party was given a chance to respond.”).

“In an IPR, the petitioner has the burden from the onset to show with

particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid

Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (petitions must identify “with

particularity . . . the evidence that supports the grounds for the challenge to each

claim”); 35 U.S.C. § 312(a)(3). This burden of persuasion never shifts to the patent

owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378

(Fed. Cir. 2015).

5

“To satisfy its burden of proving obviousness, a petitioner cannot employ

mere conclusory statements. The petitioner must instead articulate specific

reasoning, based on evidence of record, to support the legal conclusion of

obviousness.” In re Magnum Oil Tools Int’l, 829 F.3d at 1380. The obviousness

inquiry requires considering whether one of skill in the art “would have been

motivated to combine the prior art to achieve the claimed invention.” In re NuVasive,

Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016) (quoting In re Warsaw Orthopedic, Inc.,

832 F.3d 1327, 1333 (Fed. Cir. 2016)). “[T]he factual inquiry whether to combine

references must be thorough and searching…” Id.

“If the proposed modification or combination of the prior art would change

the principle of operation of the prior art invention being modified, then the

teachings of the references are not sufficient to render the claims prima facie

obvious.” MPEP § 2143.01 (citing In re Ratti, 270 F.2d 810, 813 (C.C.P.A. 1959)).

V. Level of Ordinary Skill in the Art

Petitioner argues a person of ordinary skill in the art (“POSITA”) for the ’073

Patent would have had “a Bachelor’s Degree in Electrical Engineering or Computer

Science and two or more years of experience working with search engines as of the

earliest priority date to which the ’073 patent is entitled.” Pet. at 5. PO does not

6

contest that definition at this stage, because Petitioner has failed to demonstrate a

reasonable likelihood of success on any claims, as discussed below.1

Petitioner relies heavily on a declaration from Dr. Harley R. Myler. EX1002.

Dr. Myler is not a POSITA under Petitioner’s proposed definition, let alone an

expert. Nor does he identify any experience in the pertinent field of art identified by

Petitioner. EX1003 at 1. Though he cites two of his database publications, it does

not appear that he has done any research on search engines. See EX1002 ¶13; see

generally EX1003; EX2028 ¶32. Dr. Myler claims that he once advised a student on

a thesis related to “data search,” but neither the title of the paper nor the fact that it

was written before the existence of the first Web search engine suggests that the

paper was related to search engines. EX1002 ¶13; EX2028 ¶32.

Petitioner only identified one pertinent field of art in its POSITA definition

(“search engines”). Pet. at 5. Given Petitioner’s failure to provide testimony from an

expert who has any identifiable experience in that field, the Board should not give

any weight to EX1002. See Sundance, Inc. v. Demonte Fabricating Ltd., 550 F.3d

1356, 1364 (Fed. Cir. 2008) (“[A] witness not qualified in the pertinent art [may not]

testify as an expert on obviousness, or any of the underlying technical questions,

1 If the Board institutes this Petition, PO may propose a different POSITA definition.

7

such as the nature of the claimed invention, the scope and content of prior art….”);

Compare EX1002 ¶¶5-17 with EX2028 ¶¶4-11.

VI. Claim Construction

Claims are construed according to Phillips v. AWH Corp., 415 F.3d 1303 (Fed.

Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). “Any prior claim construction

determination concerning a term of the claim in a civil action…will be considered.”

Id.

Petitioner does not propose any claim constructions. PO agrees that all the

claim terms should be afforded their Phillips plain and ordinary meaning, and that

the Petition can be denied without the need for further claim construction.

PO highlights the following claim construction positions from litigation,

which shed light on the plain and ordinary meaning of three terms:

A. Cache

The parties in the Facebook litigation agreed that the term “cache” means “a

store that includes previous queries and search results retrieved in response to

previous queries.” See EX2028 ¶33.

B. Asynchronous

In the Facebook litigation, PO has proposed that “asynchronous” and

“asynchronously” be given their plain and ordinary meaning, which a POSITA

would understand as “each side of the communication is free to communicate

8

without waiting for the other side,” or equivalently “each side of the communication

can communicate with the other side in a non-blocking manner.” EX2023 at 27-32;

see also EX2028 ¶34. These constructions are consistent with how the term has been

construed in 3 prior litigations and a prior IPR, each involving patents in the same

family. See Masterobjects, Inc. v. Ebay, Inc., No. 3:12-cv-680 JSC, 2013 U.S. Dist.

LEXIS 47001, at *19 (N.D. Cal. 2013); MasterObjects, Inc. v. Yahoo!, Inc., No. C

11-02539 JSW, 2013 U.S. Dist. LEXIS 168296, at *16 (N.D. Cal. 2013);

MasterObjects, Inc. v. Google, Inc., No. C 11-1054 PJH, 2013 U.S. Dist. LEXIS

74767, at *15 (N.D. Cal. 2013); eBay Inc. v. MasterObjects, Inc., IPR2017-00740,

Paper 8 at 10 (P.T.A.B. July 27, 2017).

C. Incomplete Search Query

In the Facebook litigation, Defendant proposed that the phrase “sending a

string representing an incomplete search query” (’073 patent, claim 1) be construed

as “[e]ach query consists of only the changes to the input string that were not sent

in any previous consecutive query.” EX2024 at 11-21. PO disagrees and has asked

the Court to construe the term to have its plain and ordinary meaning, rejecting

defendant’s position that this term is limited to a message comprising “only the

changes to an input string.” Rather, the query may include the entire current input

string. EX2026 at 2-21; see also EX2028 ¶35.

9

Facebook’s claim construction position is incorrect and should be rejected for

at least the reasons the Board gave in the previous eBay IPR concerning a related

term in the ’024 Patent:

Unlike the claims at issue in the ’529 patent, the challenged claims of the ’024 patent do not include the terms “additional character,” or “modify,” both of which suggest sending only a change, and Petitioner has not identified specific language in the challenged claims that suggests the server is sending only changes. … the ’024 Specification states that “the protocol of the invention provides a number of messages that allow the Client Quester to send just the changes to the input buffer, instead of the entire input buffer.” … We do not find this disclosure to be a clear disavowal of sending more than just changes because the language “that allow” indicates the protocol allows for, but is not limited to, sending only changes. … Patent Owner points out, for example, that the Specification expressly discloses sending a query message that comprises an input string that includes both the original input string and newly added characters. … we determine that the term “query message” is not limited to a message comprising only the changes to an input string, and may include the entire input string.

IPR2017-00740, Paper 8 at 12–14.

Petitioner has not proposed a construction for this term, and Petitioner appears

to take positions consistent with PO’s proposed construction. See, e.g., Pet. at 9

(“Kamvar discloses, while the user is entering the search query … automatically

sending a partial query … to a search engine … ‘A partial query might include a

single search term of the search query, multiple search terms, or it might include a

number of characters of a search term.’”); EX1002 ¶101 (“The incomplete search

query is the ‘user input (referred to as the inputBuffer and typed as a string of

characters),’ such as the ‘Fer’ shown in Figure 13C.”).

10

VII. Argument

A. The Challenged Claims are entitled to a priority date no later than August 20, 2001

The challenged claims are entitled to at least the priority date of U.S. Patent

Application Number 09/933,493 (the “’493 Application”), filed August 20, 2001.2

EX1001 at 1:24-30. Petitioner argues that “[t]he claims of the ’073 patent are not

entitled to the…priority date of the 2001 application” because it “does not provide

support for ‘a cache of query strings and search results based on content queries

received from multiple users,’ as recited by claim 1, on which all the other claims

depend.”3 Pet. at 3-5.

Petitioner concedes that the application teaches a “‘server-side cache’ that

includes ‘information that was previously retrieved from Content Engines.’” Pet. at

2 The ’073 Patent claims were conceived no later than November 11, 2000. EX2003

at 3-4. If the Board institutes, PO reserves the right to rely on the earlier conception

date.

3 Petitioner does not identify whether it believes the ’493 Application lacks written

description support or enablement support, and therefore failed to identify this

ground with particularity. 35 U.S.C. § 312(a)(3). Because Petitioner did not make

any arguments regarding undue experimentation or the Wands factors, PO interprets

the Petition as challenging written description only.

11

3-5. Petitioner never expressly identifies why it believes “based on content queries

received from multiple users” is not supported, but its continuation-in-part

arguments suggest that Petitioner believes the ’493 Application only provides

support for a cache of query strings and search results based on content queries from

a single user, not multiple users. Pet. at 3-4. Petitioner argues that support for a cache

based on queries from multiple users was not added until a 2005 continuation-in-

part of the ’493 Application. Pet. at 3-4. A diagram showing the priority chain for

the ’073 Patent is shown below:

12

Petitioner fails to address the teachings in the ’493 Application, which support

both single and multiple user caching. Furthermore, as Petitioner concedes, the

subsequent applications also provide support for this limitation. Therefore, the ’073

Patent is entitled to at least the priority date of the ’493 Application.

13

First, Petitioner incorrectly asserts that PO has the burden of proving that it is

entitled to the claimed priority date.4 In Dynamic Drinkware, LLC v. Nat’l Graphics

Inc., the Federal Circuit explained that “there are two distinct burdens of proof: a

burden of persuasion and a burden of production.” Dynamic, 800 F.3d at 1378. The

petitioner has the initial burden to produce evidence that the challenged patent is not

entitled to its claimed priority date, after which the burden of production shifts to the

patent owner to provide evidence and argument showing “that the asserted claims

were entitled to a date of invention prior to that of the [asserted prior art].” Id. at

1380. The burden of production then shifts back to the petitioner. Id. The burden of

persuasion never shifts away from the petitioner. Id. at 1378-1380. While PO has the

burden of presenting additional evidence in response to Petitioner’s challenge,

4 Petitioner cites PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed.

Cir. 2008). The Federal Circuit explained in 2008 that PowerOasis addressed the

burden of production, not the burden of persuasion. Tech. Licensing Corp. v.

Videotek, Inc., 545 F.3d 1316, 1328-29 (Fed. Cir. 2008) (“That ultimate burden [of

persuasion] never shifts, however much the burden of going forward may jump from

one party to another as the issues in the case are raised and developed. Correctly

understood, PowerOasis is fully consistent with this understanding…”).

14

Petitioner retains the burden of proving that the ’073 Patent is not entitled to the

priority date of the ’493 Application.

To claim priority to a prior application, that application must “describe an

invention, and do so in sufficient detail that one skilled in the art can clearly conclude

that the inventor invented the claimed invention as of the filing date sought.”

Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571-72 (Fed. Cir. 1997). “[T]he

exact terms need not be used in haec verba,” rather “the specification must contain

an equivalent description of the claimed subject matter.” Id.

That the earlier application does not recite identical language to ’073 Claim 1

is irrelevant, because the earlier application contains a description of the claimed

subject matter, including “Content-based Cache” 222:

15

EX1010 at 67 (Fig. 2 excerpt with annotation added).

As petitioner noted and as shown in the above figure, the ’493 Application

teaches the use of a server-side content cache to more quickly provide result sets for

user content queries. See EX1010 at 18 (“Content-based Cache – A persistent store

of Queries and corresponding Result Sets executed by a Content Engine for a

specific Content Channel.”), 27 (describing caching of content channels); EX2028

¶38. The ’493 Application does not say—or suggest—that all cache embodiments

are limited to queries received from a single user, nor does it teach that the invention

would not cache queries received from multiple users.

Instead, the ’493 Application expressly discloses embodiments where the

cache receives and caches queries from multiple “simultaneous users”:

End users of the present invention experience an unprecedented level of user-friendliness accessing information that is guaranteed to be up-to-date while being efficiently cached for speedy access as the number of simultaneous users grows.

EX1010 at 55 (emphasis added). In this quote, the ’493 Application teaches that end

users (plural) access information that is cached for speedy access as the number of

simultaneous users (plural) grows. A cache that responds to queries from a “number

of simultaneous users” is a cache “based on content queries received from multiple

users.” EX2028 ¶39. Petitioner does not even address this passage. This should end

the inquiry, but the ’493 Application provides additional support as well.

16

The ’493 Application figures further demonstrate that the disclosure includes

cache embodiments which handle queries and results from multiple users. In Fig.

8A, the ’493 Application includes the class definitions for QoResultsCache (which

contains the cache entries) and QoResultsCacheEntry (a cache entry). ’493

Application Fig. 8, ¶117.

’493 Application excerpt of Fig. 8A with annotations.

17

Neither the QoResultsCache nor the QoResultsCacheEntry has a user

identifier—which means that in this embodiment they would contain result sets and

query strings for multiple users, not for a single user. EX2028 ¶46. In contrast, the

Fig. 8D embodiment tracks information on a per-user basis, and therefore includes

user identifiers:

’493 Application excerpt of Fig. 8D with annotations.

If the cache in the ’493 Application were limited to embodiments based on

content queries received from single users (instead of multiple users), a POSITA

would expect the cache objects in Fig. 8A to have a user field as well. EX2028 ¶47.

18

The ’493 Application also teaches:

The Server Controller may look up query ‘a’ in its Result Set cache, in which case it can return a previous Result Set to the Client without accessing the Service.

EX1010 at 34. This excerpt is relevant because the user has only typed one character

(“a”) and there is nothing stating that the user has ever previously interacted with the

system. It therefore teaches that the cache contents would come from queries

received from other users. EX2028 ¶¶41-42.

It is unclear why Petitioner believes the disclosed content cache containing

query strings and search results based on queries from multiple simultaneous users

is not “a cache of query strings and search results based on content queries received

from multiple users.” The minor differences in phrasing are irrelevant—the

application teaches the limitation. The Petition does not cite any evidence to show

how a POSITA would have understood the cache disclosure and embodiments, and

instead relies primarily on attorney argument (largely of a later CIP with little

relevance to the inquiry).5 Pet. at 3-5. Petitioner also does not cite any evidence to

5 Even if the Petitioner had cited to Dr. Myler, he produced only conclusory

statements devoid of analysis. EX1002 ¶¶53-55. Dr. Myler does not explain how a

POSITA would have understood the ’493 Application disclosure, provides no

analysis of the ’493 Application embodiments, and offers no discussion of the state

19

show that the caches in the ’493 Application would be limited to a single user. Nor

does Petitioner address any of the cache teachings cited above.

The lack of analysis in the Petition is because a POSITA would have

understood that some of the disclosed embodiments teach or necessarily require “a

cache of query strings and search results based on content queries received from

multiple users.” EX2028 ¶44. The ’493 Application gives the example of Enterprise

systems that the invention can be used to implement, including: Enterprise thesauri

systems, Enterprise search and retrieval systems, Enterprise reference works, and

Enterprise address books. EX1010 at 13; EX2028 ¶44. The Application teaches that

Enterprise systems consist of shared data that is accessed by multiple users at the

enterprise. EX1010 at 2-4; EX2028 ¶44. A POSITA would understand such server-

side caching for Enterprise systems is inherently a cache for multiple users, not a

single user. EX2028 ¶44. A POSITA would understand that those Enterprise caches

could not be implemented as caches for a single user, without using significantly

of the art of caching. EX1002 ¶¶53-55. He simply concludes that it does not support

the challenged claims. EX1002 ¶55. “Expert testimony that does not disclose the

underlying facts or data on which the opinion is based is entitled to little or no

weight.” 37 C.F.R. § 42.65(a).

20

more resources, performing worse than a multiple user cache and reintroducing the

same prior art problems that the inventor sought to address. Id.

The ’493 Application also identifies “Enterprise address books” and “Personal

address books” as separate embodiments. EX1010 at 13-14; EX2028 ¶45. A

POSITA would have recognized that an enterprise address book handles queries

(and caches data) for multiple users within the enterprise, while a personal address

book handles queries (and caches data) for an individual user. EX2028 ¶45.

Petitioner’s invalidity arguments further demonstrate that these embodiments

provide support for the ’073 Patent. Petitioner argues that the Porter reference

teaches a cache “based on content queries received from multiple users,” merely

because it purportedly discloses “a search engine [that] serves (and thus receives

searches from) multiple ‘users 108.’” Pet. at 70-71. It is inconsistent for Petitioner

to argue that the ’493 Application’s disclosure of a specific cache which serves

multiple simultaneous users is an insufficient disclosure, while arguing that a

reference which merely discloses a search engine serving multiple users is

invalidating.

At its core, Petitioner’s remaining argument boils down to the claim that,

because the CIP to the 2001 application included additional material, somehow that

proves that the original disclosure was insufficient. Pet. at 3-4. The Federal Circuit

has ruled that such considerations are largely irrelevant. In Blue Calypso, LLC v.

21

Groupon, Inc., the Federal Circuit reversed a decision that held claim terms

including “endorsement tag” and “token” did not satisfy 35 U.S.C. § 112. Blue

Calypso, 815 F.3d 1331, 1344 (Fed. Cir. 2016). The Federal Circuit noted that the

absence of those exact terms from the written description was not dispositive, and

that further evidence evaluated from the viewpoint of a POSITA was necessary to

evaluate whether the claim limitations had sufficient written description support. Id.

at 1345-46. Petitioner Groupon had argued that “shortly after these terms were added

to the claims, the inventor filed a continuation-in-part application that included

additional explanations related to tags and tokens.” Id. at 1347. The Federal Circuit

found that argument unpersuasive, noting the CIP “ha[d] little significance because

it provides no insight into the relevant inquiry of whether the four corners of the

[patent] provide written description support for the claim terms at issue” and held

that the claims had written description support, even in the absence of a word-for-

word recitation in the specification. Id.

This Petition is much the same: Petitioner relies heavily on the (largely

irrelevant) additions to the CIP because it cannot show that the ’493 Application

lacks support.6 Petitioner has not challenged support for this limitation in any

6 The Federal Circuit noted that petitioner’s expert could not support a finding of no

written description because he used only language which was “abstract and

22

application other than the ’493 Application (in fact, Petitioner argues that the

subsequent applications do provide support), and Dr. Pazzani’s opinion further

reinforces the support for this limitation in each prior application. EX2028 ¶¶50-54.

The ’073 Patent is entitled to a priority date no later than August 20, 2001.

B. Ground 1: No Claims are Obvious based on Kamvar and a POSITA’s Knowledge

Petitioner argues that claims 1, 6-8, and 11 are obvious based on Kamvar and

a POSITA’s knowledge. Pet. at 5-38. This is wrong, both because Kamvar is not

prior art and because Petitioner has not shown a reasonable likelihood of success on

the merits.

1. Kamvar is not prior art

Kamvar has a filing date of June 22, 2004, and a publication date of Dec. 22,

2005. Ex. 1005. The challenged claims of the ’073 Patent are entitled to a priority

date no later than August 20, 2001. Therefore, Kamvar is not prior art, and all

challenges based on Kamvar fail.

untethered from the context provided by the [patent].” Blue Calypso, 815 F.3d at

1346-47. Dr. Myler made similar claims devoid of any analysis tethered to the

described embodiments.

23

Even if Kamvar were prior art, Petitioner has not carried its burden of

demonstrating a reasonable likelihood that Kamvar and a POSITA’s knowledge

teach each limitation of claims 1, 6-8, and 11.

2. Claim [1d]: “matching, by the server system, the string to entries in a cache of query strings and search results based on content queries received from multiple users, whereby cached search results contain a subset of data from one or more content sources”;

Petitioner has failed to show that the combination teaches a “cache of query

strings and search results.” Petitioner concedes that Kamvar does not teach this

element, and instead relies on a hindsight combination of a dictionary and a cache,

one of which Petitioner claims is a cache of query strings and one of which Petitioner

claims is a cache of search results. Pet. at 19-20 (conceding the dictionaries “are

separate from the predicted query results cache”); EX1002 ¶125. Petitioner argues

“[i]t would have been obvious to a POSA, [] for the dictionaries 330, 332 and

predicted query results cache 328 to be part of the same cache.” Pet. at 20.

Petitioner’s analysis fails to show invalidity based on a POSITA’s knowledge.

First, Petitioner’s argument impermissibly relies on Dr. Myler’s unsupported

and conclusory testimony to fill in the missing limitation. But Dr. Myler is not a

POSITA or an expert in the relevant field. Additionally, in the context of using a

POSITA’s knowledge to supply a missing limitation, the Federal Circuit considers

whether “‘the [missing] limitation in question [is] unusually simple and the

24

technology particularly straightforward.’” Koninklijke Philips N.V. v. Google LLC,

948 F.3d 1330, 1338 (Fed. Cir. 2020) (quoting Arendi S.A.R.L. v. Apple Inc., 832

F.3d 1355, 1361-62 (Fed. Cir. 2016)). Petitioner has provided no evidence or

argument that it would have been unusually simple and straightforward for “the

dictionaries matching partial queries to predicted queries, and the predicted query

results cache matching predicted queries to search results, [to] be ‘grouped’ as a

cache matching partial queries to search results.” Pet. at 20-21.

Such a combination is not obvious because: (1) the data structures are not the

same type (one is a dictionary, one is a cache); (2) the data they store is different

(one stores a “master set” or curated list of search terms, and the other one stores

predicted results); and (3) the data structures are implemented as separate,

unconnected elements under different components of the proposed architecture (the

dictionary is connected to the Auto-Complete Server, and the cache is part of the

Query Server, as shown in annotated Kamvar Fig. 3, Pet. at 20). EX2028 ¶¶61-64.

There is simply no evidence suggesting it would have been simple or straightforward

to combine or link those data structures.

Even if Petitioner had provided evidence that the missing limitation was

straightforward, Petitioner failed to show that the limitation would have been within

a POSITA’s knowledge. “[R]eferences to common sense cannot be used as a

wholesale substitute for reasoned analysis and evidentiary support,” and Petitioner

25

cannot rely on “conclusory statements and unspecific expert testimony” to provide

that support. Koninklijke, 948 F.3d at 1338 (internal quotes and citations omitted).

Petitioner cited only to Dr. Myler, who provides nothing more than a conclusory

statement: “a POSA would have understood from Kamvar that the dictionaries

matching partial queries to predicted queries, and the predicted query results cache

matching predicted queries to search results, could be ‘grouped’ as a cache matching

partial queries to search results.” EX1002 ¶126. Dr. Myler (who is not a POSITA)

does not address how a POSITA would know how to combine or link two disparate

data structures containing two disparate data types implemented under two different

components of the proposed architecture.

If such a modification was within a POSITA’s knowledge, then one would

expect Dr. Myler to provide evidentiary support, such as a reference demonstrating

a “grouped” or “linked” cache, analysis regarding cache design at the time of

invention, or testimony that Dr. Myler used or witnessed a similar combination. But

Dr. Myler only provides a citation to a boilerplate statement in Kamvar that “[o]ne

of ordinary skill in the art would recognize that an actual implementation might have

the functional elements grouped or split among various components.” EX1005 ¶27;

EX1002 ¶126. The cited portion of Kamvar does not teach that a cache and a

dictionary should be grouped. EX2028 ¶¶63-64. Instead, it says that an

implementation might arrange the elements differently than Fig. 3 does. The cited

26

paragraph does not mention the cache or any other specific elements, and it provides

no support for Petitioner’s claim that a POSITA would have known to make the

specific combination of a cache and a dictionary.

Petitioner also fails to make a case for why a POSITA would have modified

the teaching of Kamvar. Petitioner merely asserts that “a POSITA would have

understood from Kamvar that the dictionaries and the predicted query results cache

“could be ‘grouped’ as a cache matching partial queries to search results.” Pet. at

20-21 (emphasis added). “The mere fact that the prior art could be so modified would

not have made the modification obvious unless the prior art suggested the

desirability of the modification.” In re Mills, 916 F.2d 680, 682 (Fed. Cir. 1990)

(quoting In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984)) (emphasis added).

Petitioner also fails to address how combining or linking the data structures

would affect the functioning of Kamvar. For example, Kamvar notes that there will

be situations where entries in the dictionary will not have a corresponding entry in

the cache. See EX1005 ¶41 (noting that results related to a dictionary entry “might

still be stored in a cache somewhere” (emphasis added)). EX2028 ¶66. Additionally,

because a dictionary is a curated list of query terms, there will be situations where

entries in the cache will not have a corresponding entry in the dictionary. EX2028

¶¶65-66. Thus, a POSITA could not just “group” them as Petitioner suggests and

arrive at the claimed cache—other changes to the proposed architecture would be

27

necessary to achieve a functional cache. See EX1001 Claim 1 at 39:28-29; EX2028

¶¶65-66.

3. Claim [1f]: “sending, by the server system to the client computer prior to completion of the search query at the client, a message containing information identifying the incomplete search query and at least a portion of the search result data that identifies the content in a content source”;

Kamvar does not teach this limitation, at least because it does not teach that

“a message containing information identifying the incomplete search query” is sent

by the server to the client. Petitioner argues this limitation is satisfied when Kamvar

“sends a predicted query for the partial query to the client system.” Pet. at 27.

However, a predicted query (alone) does not “identify[] the incomplete search

query.” For example, Kamvar teaches one example where a partial query of “Bri”

results in predicted queries including “Britney Spears” and “Pubs of Britain.”

EX1005 ¶46. However, neither of those predicted queries could be used to identify

the incomplete search query. EX2028 ¶67. If the client received the predicted query

“Pubs of Britain,” it is impossible to know whether the incomplete search query was

“Pub”? “Bri”? “Pubs of Britai”?

Petitioner argues that Kamvar teaches an embodiment where “the partial

query is identical to the predicted query.” Pet. at 27. In the cited embodiment,

multiple predicted queries are returned. EX1005 ¶45. Multiple predicted queries

cannot “identify” the partial search query. Dr. Myler argues that it might be possible

28

for only one query to be returned, because he says Kamvar teaches that a “positive

integer” number would be returned. EX1002 ¶144. EX2028 ¶68. Even in that

hypothetical scenario, the predicted query would not identify the incomplete search

query—if the server returns the predicted query “Pubs of Britain” regardless of

whether the incomplete search query was “Pub” or “Pubs of Britain,” then the

predicted query cannot be used to identify the actual incomplete search query with

any level of confidence. EX2028 ¶69.

Petitioner also argues that a “POSA would have understood that a predicted

query identical to the partial query ‘identif[ies] the incomplete search query.’” Pet.

at 27. Kamvar teaches such a match will only occur in the case of a complete search

query, not an incomplete one as required by the claim. And, again, the predicted

query could not be used to identify the actual query with any level of confidence.

EX2028 ¶69. Dr. Myler provides only conclusions without any underlying analysis.

EX1002 ¶145; 37 C.F.R. § 42.65(a).

4. Claim [1g]: “asynchronously receiving, on the client computer, without loading another web page and while the user is entering the content search query into the field, the message [from the server system], and”

Kamvar does not teach this limitation, at least because it does not teach

“asynchronously receiving…the message.”

29

First, as discussed above for limitation [1f], Kamvar does not teach sending

“a message … identifying the incomplete search query,” so it also does not teach

receiving said message.

Second, Kamvar does not teach that the client receives the message

asynchronously. EX2028 ¶70. Petitioner argues that the message was received

asynchronously because the Kamvar search results “may be presented to the user

while the user is still entering the complete query.” Pet. at 28-30. However,

displaying results is not the same thing as receiving a message, and presenting results

to the user while the user is still entering the query does not mean the search results

must have been received asynchronously. EX2028 ¶71. Asynchronously receiving a

message depends on the transmission and reception of data, not on how or when that

data is ultimately displayed. A POSITA could implement Kamvar with synchronous

communication and still be able to present search results to a user while the user is

entering the complete query. EX2028 ¶72. Thus, Kamvar does not teach that the

results must have been received asynchronously.

The word “asynchronous” does not appear in Kamvar, and Petitioner has not

identified anything in Kamvar that teaches an asynchronous implementation.

Therefore, Petitioner has failed to identify “with particularity” where this challenged

limitation is taught, and Petitioner cannot demonstrate a reasonable likelihood of

30

succeeding based on Kamvar and a POSITA’s knowledge. 35 U.S.C. § 312(a)(3);

35 U.S.C. § 314(a).

5. Claim [6]: “The method of claim 1, further comprising sending, by the server system to the client computer, a message containing updated search result data in response to asynchronously receiving, from the client computer, a string representing an updated version of the search query.”

As shown for element [1g], Kamvar does not disclose “asynchronously

receiving.” Petitioner argues that this is taught by Kamvar, which Petitioner says

teaches that “the return of search results ‘may overlap with receiving predicted

queries.’” Pet. at 33. That the predicted queries and predicted search results may

overlap simply means that the client might receive them at the same time. Nothing

about that overlap requires that the implementation be asynchronous—for example,

the data could be sent together as part of the same synchronous transmission.

EX2028 ¶¶73-74. Accordingly, nothing Kamvar teaches is “in response to

asynchronously receiving…” as required by Claim 6.

C. Ground 2: No Claims are Obvious based on Kamvar in view of Baluja

Petitioner argues that claims 2, 4, 5, 9, 10, and 12 are obvious based on

Kamvar in view of Baluja. Pet. at 38-55. This is wrong for multiple reasons:

1. Kamvar and Baluja are not prior art

As shown, Kamvar is not prior art. Nor is Baluja, which has a filing date of

Dec. 3, 2004 and a publication date of June 8, 2006. EX1006. The ’073 Patent claims

31

are entitled to a priority date no later than August 20, 2001. Accordingly, all

challenges based on Baluja fail.

2. Petitioner has not asserted that Claim 1 is invalid under Ground 2

Claims 2, 4, 5, 9, 10, and 12 all depend from Claim 1, but Petitioner has not

asserted that Claim 1 is invalid under the Ground 2 combination of Kamvar and

Baluja. Without showing that independent Claim 1 is invalid based on this

combination, Petitioner cannot show that dependent Claims 2, 4, 5, 9, 10, and 12 are

invalid, because they include all the Claim 1 limitations.

If Petitioner intended to incorporate its Claim 1 analysis from Ground 1 (and

failed to do so), this would be improper because Ground 1 is based on a different

combination that includes a POSITA’s knowledge (which is not part of Ground 2).

If Petitioner has a different invalidity theory for Claim 1 based on Kamvar and

Baluja, that argument was omitted. These defects are fatal to Ground 2 because they

fail the specificity requirements and have real consequences for PO’s ability to

respond to the Petition.

Specifically, these defects mean that Ground 2 fails the requirements of 35

U.S.C. § 312(a)(3) that “the petition identifies, in writing and with particularity, each

claim challenged, [and] the grounds on which the challenge to each claim is

32

based…” Even if PO could infer7 what Petitioner’s intention was, the Board cannot

institute on grounds other than those specifically proposed by Petitioner. See

Koninklijke, 948 F.3d at 1336. Thus, Petitioner has failed to show a reasonable

likelihood of success for Ground 2. See Apple Inc. v. MPHTechnologies OY,

IPR2019-00820, Paper 37 at 49-55 (P.T.A.B. Sept. 24, 2020) (holding petitioner

7 Petitioner’s Ground 1 mapping conflicts with its Ground 2 mapping, so reliance on

any Ground 1 arguments would be infeasible even if Petitioner had incorporated

them. For example, Petitioner points to different elements of Kamvar as providing

the “content data” claim limitation for Ground 2 Claim 10 than it pointed to for its

Ground 1 Claim 1 analysis, which demonstrates that Ground 2 is based on a different

claim mapping than Ground 1. Ground 1 Claim 1d suggested the search results of

Kamvar were the search results of Claim 1 (Pet. at 15), and Ground 1 Claim 1h

suggested the “content data” was “a document corresponding to each search result.”

Pet. at 30-32. Ground 2 Claim 10 instead suggests that the search results of Kamvar

represent the content data. Pet. at 52. Furthermore, in its Ground 1 Claim 1h analysis

Petitioner cited to Kamvar Fig. 4 and argued that after a user selects a search result

at stage 414, then the document received at stage 418 was the content data. Pet. at

31-32. For Ground 2 Claim 10, Petitioner argues that the search results (previously

selected at stage 414) are the content data. Pet. at 52-53.

33

failed to “account for the limitations of [an] intervening claim” because the petition

did not allege the asserted ground of the dependent claims rendered the limitations

of the parent claim unpatentable).

Moreover, Petitioner has not carried its burden of demonstrating a reasonable

likelihood that the combination of Kamvar and Baluja teaches each limitation of

Claims 2, 4, 5, 9, 10, and 12. PO hereby incorporates and re-alleges its arguments

and evidence presented under Ground 1, above.

3. Claim [9]: “The method of claim 8, wherein retrieving search result data comprises: sending one or more content inquiries to one or more respective content sources; and receiving content data in response to the one or more content inquiries.”

Claim 9 requires “receiving content data in response to the one or more

content inquiries.” Petitioner fails to identify what in Baluja teaches the “content

data” and the “content inquiry.” Pet. at 50-52. Petitioner does not even use the phrase

“content data” in its analysis, and never clarifies what specific component of Baluja

(or Kamvar) represents the content inquiry. “In an IPR, the petitioner has the burden

from the onset to show with particularity why the patent it challenges is

unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir.

2016) (emphasis added). In Harmonic, the Federal Circuit found that the petitioner

failed to show unpatentability because it failed to relate the cited art back to the claim

limitations with particularity. Id. Similarly here, Petitioner mentions the cited art

34

teaching scanning the internet and locating data in a database, but never ties the

elements in the art back to the specific claim language. Petitioner has failed to carry

its burden.

4. Claim [10]: “The method of claim 9, wherein at least a portion of the content data is stored in the cache after receiving it from the one or more respective content sources.”

Claim 10 requires “at least a portion of the content data is stored in the cache.”

Regarding “the content data,” Petitioner refers back to its analysis of Claim 9—

which does not even use the phrase “content data.” Pet. at 52. For “the cache,”

Petitioner refers to its analysis of Claim 1d, but Petitioner did not offer any analysis

for Claim 1 under Ground 2. Id. Thus, Petitioner has failed to carry its burden.

D. Ground 3: No Claims are Obvious based on Kravets in view of Porter and Barr

Petitioner argues that Claims 1, 2, 4, 5, and 8-11 are obvious based on Kravets

in view of Porter and further in view of Barr. Pet. at 56-86. This is wrong for several

reasons:

1. Porter is not prior art

Petitioner claims Porter is entitled to the Nov. 21, 2000 priority date of its

provisional application, but Petitioner has not demonstrated that Porter is supported

by the provisional.

Petitioner has the burden of proving that Porter is entitled to its provisional

date. Dynamic, 800 F.3d at 1380, 1382. “A reference patent is only entitled to claim

35

the benefit of the filing date of its provisional application if the disclosure of the

provisional application provides support for the claims in the reference patent in

compliance with § 112.” Id. Petitioner must further show that the portions of the

Porter disclosure relied on are also supported by the provisional application. See

Intex Recreation Corp. v. Team Worldwide Corp., IPR2018-00859, Paper 128 at 26

(P.T.A.B. Oct. 21, 2019)(“Petitioner must demonstrate that the subject matter in

Chaffee relied upon by Petitioner in its unpatentability contentions is sufficiently

supported in the Chaffee ’836 provisional, this test being in addition to the

comparison of claimed subject matter required by Dynamic Drinkware.”) (citing In

re Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010)).

As a threshold matter, Petitioner has not shown that even its cherry-picked

claim is supported by the provisional. Petitioner cites to Dr. Myler, who addresses

Claim 7 of Porter. Pet. at 56-57; EX1002 chart at 46-49. Dr. Myler’s analysis is

deficient. First, there is no direct support for any of the limitations in the cited portion

of the Porter provisional, and Dr. Myler did not attempt to provide any explanation

as to why he believes the quoted snippets provide support for claim 7. As such, his

conclusory analysis is entitled to little or no weight. 37 CFR § 42.65(a).

Dr. Myler failed to show support for limitation 7b (“an adapter for formatting

said search query”), at least because the limitation invokes pre-AIA 35 U.S.C. § 112

¶6 without providing sufficient structure to perform the claimed functional

36

language.8 See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1350-51 (Fed. Cir.

2015). Like the term “module” in the Williamson case, the term “adapter” used here

is simply “a generic description for software or hardware that performs a specified

function” Id.; EX2028 ¶56. “When dealing with a ‘special purpose computer-

implemented means-plus-function limitation,’ [the Federal Circuit] require[s] the

specification to disclose the algorithm for performing the function.” Function Media,

L.L.C. v. Google Inc., 708 F.3d 1310, 1318 (Fed. Cir. 2013). A POSITA would not

understand the cited portions of the Porter provisional to disclose an algorithm for

formatting a search query. EX2028 ¶56.

For limitation 7d (“a second database comprising returnable metadata related

to said search results generated from searchable metadata”), nothing cited in Dr.

Myler’s chart refers to such a second database. Dr. Myler lists only two databases

without further explanation. First, Dr. Myler lists “Search DB (13),” which appears

in Figure 1 and nowhere else in the Porter provisional. Dr. Myler does not attempt

8 Petitioner’s failure to provide any § 112 ¶6 analysis is fatal. Cf 2019 Consolidated

Trial Practice Guide at 45 (“Where claim language may be construed according to

35 U.S.C. § 112(f), a petitioner must provide a construction that includes both the

claimed function and the specific portions of the specification that describe the

structure, material, or acts corresponding to each claimed function.”).

37

to provide any explanation as to what Search DB contains, and a POSITA would not

understand “Search DB” to be a database comprising “returnable metadata related

to said search results generated from searchable metadata” as required by the

limitation. EX2028 ¶57.

For the “Workflow database,” the cited portion fails to show how a workflow

database is “related to said search results generated from searchable metadata.”

EX2028 ¶57. Because the provisional lacks direct support for this limitation, and

because Dr. Myler provides only conclusions without analysis, Petitioner has failed

to show that this limitation is supported by the provisional. EX2028 ¶57.

Limitations 7g (“coordinating search of said second database”) and 7j

(“retrieving search results related to said search query from said first database and

said second database”) are also unsupported because Dr. Myler never identified the

second database in 7d.

For limitations 7h (“if no search results related to said search query are found

in said first database, searching at least a third database for results related to said

search query”) and 7i (“updating said first database with said results related to said

search query from searching said third database”), none of the cited portions in Dr.

Myler’s chart identify a third database. Nor does Dr. Myler attempt to identify what

element in the provisional would represent a third database. The cited portions refer

38

to a search-engine adapter and several engines, but a POSITA would not recognize

either of those to be a database. EX2028 ¶58.

Because Petitioner has failed to show that the Porter provisional supports any

claims of Porter, the earliest date to which Porter could conceivably claim priority

is the PCT Nov. 20, 2001 filing date. Because the ’073 Patent is entitled to a priority

date no later than August 20, 2001, Porter is not prior art and Ground 3 based on

Porter fails.

Even if Petitioner had shown that the provisional supports claim 7 in Porter,

Petitioner failed to demonstrate that the teachings of Porter that Petitioner relies on

are supported in the provisional. Petitioner cites to Porter as teaching at least one

limitation of every challenged claim in Ground 3. However, there is not any overlap

between the cited portions of Porter and the provisional. Throughout Ground 3,

Petitioner cites Porter Figs. 2, 4 and ¶¶5, 15, 19, 20, 23, 24, 27, 30, 32, 33, 39, 41.

None of those figures or paragraphs are in the provisional. Compare EX1008 with

EX1013. At no point does Petitioner attempt to identify an equivalent disclosure in

the provisional. Thus, for this additional reason, Petitioner has not shown that any

of the Porter disclosure it cites is entitled to the priority date of the provisional. This

is fatal to Ground 3.

39

Petitioner also has not carried its burden of demonstrating a reasonable

likelihood that a combination of Kravets in view of Porter and Barr teaches each

limitation of Claims 1, 6-8, and 11.

2. Petitioner has not asserted its grounds for invalidity with particularity.

35 U.S.C. § 312(a)(3) requires that the Petitioner identify the grounds for each

claim challenged with particularity. Petitioner initially argues that “claims 1, 2, 4, 5,

and 8–11 would have been obvious based on Kravets in view of Porter and Barr.”

Pet. at 56. However, Petitioner also relies on a POSITA’s knowledge. See, e.g., Pet.

at 77 (“the POSA would have known how to include unique identifiers in HTTP

requests and responses”). Because it is not clear whether Petitioner’s Ground 3 is

based solely on Kravets in view of Porter and Barr, or whether it is actually Kravets

in view of Porter and Barr and in further view of a POSITA’s knowledge, Petitioner

has failed the particularity requirement, and Ground 3 should be denied.

3. Claim [1a]: “A method, comprising: detecting, on a client computer, entry of a content search query into a field on a web page by a user”;

Petitioner suggests that Kravets teaches “detecting…entry of a content search

query into a field on a web page” because “[a] POSA would have understood that

‘automatically generat[ing]’ the request when the user provides the input would

involve ‘detect[ing] . . . entry of’ the input.” Pet. at 61-62. Dr. Myler parrots the

same language, and says: “[t]his is because the client would detect entry of the input

40

in order to automatically generate the request”—which is circular at best. EX1002

¶230.

A POSITA reading Kravets would understand automatically generating a

request (e.g., the UDP request at 4:35-45) relates to generating a network request to

be sent to the search server; generating a network request does not necessarily entail

detecting entry of a content search query (something that takes place at the user

interface, not at the network level). EX2028 ¶80. Dr. Myler’s lack of analysis is fatal

here: Kravets 3:45-50 notes that the applicants filed an Appendix A which included

Javascript code used to generate the requests that Petitioner claims teach this

limitation. Dr. Myler makes no mention of even reviewing the Appendix (see

EX1002 ¶18 – Materials Reviewed), instead relying on unsupported conclusions.

Petitioner does not cite to or include the appendix in its exhibits.

4. Claim [1d]: “matching, by the server system, the string to entries in a cache of query strings and search results based on content queries received from multiple users, whereby cached search results contain a subset of data from one or more content sources”;

Petitioner cites to Kravets 4:11-35 as teaching “a cache of query strings and

search results.” Pet. at 64. While Kravets 4:11-35 mentions a cache, it states that the

cache is “used to store information such as a value score file.” EX1007 at 4:12-13.

Petitioner does not address the Kravets “value score file” cache, instead arguing “the

predictive search server stores the search terms and HTML/JavaScripts

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corresponding to the search terms.” Pet. at 64. But Petitioner never ties those items

to the values score file or the cache. Even if the predictive search server did store

those items, the fact that a software component stores data does not require or imply

that it is stored in a cache—all data must be stored in some form to be usable by a

computer. EX2028 ¶83.

That these items are not stored in the claimed cache is further supported by

Kravets 4:15-35, which notes “[t]he predictive search server 40 is operative to

maintain a master set of search terms…[and] a list of precomputed

HTML/JavaScripts that correspond to the search terms in the master set.” A POSITA

would not understand a “master set of search terms” to be “query strings and search

results based on content queries received from multiple users,” but rather a pre-

populated list of search terms. EX2028 ¶84-85.

Petitioner also proposes an alternative cache theory, claiming that the separate

query cache and results data stores of Porter—located at different parts of the

architecture as shown by Petitioner in the Porter Fig. on Petition p. 68—could be the

claimed cache. Pet. at 66, 68. Petitioner provides no explanation as to how the

architecture of Kravets (the primary reference) would be modified to accommodate

Porter’s query cache and results data stores. Petitioner provides no explanation as to

why it would be within the knowledge of a POSITA to combine a query cache and

results data store (two disparate, unlinked data structures, one of which is not

42

identified as a cache). Petitioner’s only justification is a claim that “Porter discloses

that the query cache 18 and result data stores 16 could ‘reside on a single processing

unit.’” Pet. at 66. However, a POSITA would not understand a “single processing

unit” to be a cache, because a cache is used for storage—it is not a processing unit.

A POSITA would understand a processing unit to be a processor or computer.

EX2028 ¶88.

Additionally, the “HTML/JavaScripts corresponding to the search terms”

Petitioner identifies are not search results based on content queries received from

users as required by limitation [1d]. They are “precomputed” values based on search

terms in the master set. EX1007 at 4:27-28; EX2028 ¶86. Petitioner tries to address

that shortcoming by arguing that a “POSA would have been motivated and found it

obvious to replace Kravets’ HTML/JavaScripts with Porter’s search-engine data and

displayable data because Porter’s data allows displaying search results to a user

immediately, without requiring the user to select a link.” Pet. at 64. Neither

Petitioner nor Dr. Myler addresses how this modification would work.

The cited portions of Kravets do not teach storing the HTML/Javascripts in a

cache—swapping those out with different data would not change that fact.

Furthermore, the HTML/Javascripts are precomputed values based on a master set.

None of the cited portions of Porter discusses precomputing search results, and

Petitioner does not explain how a POSITA would overcome this discrepancy.

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Modifying Kravets to replace precomputed HTML/Javascripts (Kravets at 4:27-28)

with “copies of search-engine results” (Porter ¶30) would change the principle of

operation of Kravets, without guidance from either reference as to how such a

change could be made. EX2028 ¶86. “Such a change in a reference’s ‘principle of

operation’ is unlikely to motivate a person of ordinary skill to pursue a combination

with that reference.” Plas-Pak Indus. v. Sulzer Mixpac AG, 600 F. App’x 755, 759

(Fed. Cir. 2015).

5. Claim [1f]: “sending, by the server system to the client computer prior to completion of the search query at the client, a message containing information identifying the incomplete search query and at least a portion of the search result data that identifies the content in a content source”;

This limitation requires that the message contain information identifying the

incomplete search query. Petitioner concedes that “Kravets and Porter do not

expressly state that the [] message contains information identifying the partial input.”

Pet. at 76. But Petitioner argues that “Barr explicitly teaches an identifier of a search

query and a POSA would have been motivated and would have found it obvious to

include such an identifier in the HTTP message.” Id. Petitioner points to Barr’s

“query identification number.” Id. at 77.

Barr’s query identification number does not identify an incomplete search

query—Barr teaches away from the use of an incomplete search query. For example,

Barr at 12:35-45 teaches spell checking the search query prior to sending any query

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to the data center to “prevent the wasting of resources at data center.” EX1009 at

12:35-45. This teaches away from combining Barr in a system that transmits a partial

search query (which can include the partial misspelled words that are inherent to

partial queries, such as those seen in ’073 Patent Figs. 13B-D). EX2028 ¶93.

Additionally, nothing in Barr states that the “query identification number” is

transmitted to a user with his or her search results. Instead, it is kept in a “retrieval

account table database” that is used “to log all document retrievals performed in

response to queries.” EX1009 at 37:15-19. This information can be extracted in an

“account reporting session.” Id. at 37:40-48. But that has nothing to do with

including the “query identification number” in a return message to the user

performing the partial query. EX2028 ¶92.

Unable to identify this in Barr, Petitioner relies on hand-waving by Dr. Myler,

stating that “because the POSA would have known how to include unique identifiers

in HTTP requests and responses . . . a POSA would have found it obvious to include

in the HTTP response [of Kravets + Porter] a query identifier identifying a partial

input.” Pet. at 77. Dr. Myler opines that “[a] POSA would have recognized that

including the query identification number in the search results in Kravets would have

allowed Kravets’ client to match the search results to the partial queries” and that

doing so would be beneficial because “it would have been desirable to allow the

client to match incoming search results with the partial input to which they

45

correspond.” EX1002 ¶262-263. This is a leap. Dr. Myler is imputing an entire

inventive step—there is no identification of what in the references would have led

the POSITA to make that conclusion, and no facts or data provided by Dr. Myler

that would support his claim that a POSITA would make that conclusion. EX2028

¶¶90-92.

Moreover, Petitioner relies on a POSITA’s knowledge to teach part of this

limitation. Pet. at 77 (“the POSA would have known how to include unique

identifiers in HTTP requests and responses”). As discussed above, “references to

common sense ‘cannot be used as a wholesale substitute for reasoned analysis and

evidentiary support’” and the Federal Circuit considers whether a limitation is

simple and the technology is straightforward when petitioner relies on POSITA

knowledge. Koninklijke, 948 F.3d at 1338. Petitioner has cited no evidence that

including unique identifiers in HTTP requests and responses would be simple, and

Petitioner has provided no corroborating evidence to show that the limitation would

have been within a POSITA’s knowledge.

6. Claim [1g]: “asynchronously receiving, on the client computer, without loading another web page and while the user is entering the content search query into the field, the message [from the server system], and”

Petitioner argues that “Kravets in view of Porter and Barr render obvious that

the HTTP message is asynchronously received.” Pet. at 77. However, Petitioner

never identifies where or how this asynchronous reception occurs—Petitioner does

46

not mention the word “asynchronously” aside from the first sentence. Dr. Myler fails

to identify which specific functionality Petitioner believes to be asynchronous.

EX1002 ¶264-266. Neither Kravets, Porter, nor Barr include the word

“asynchronously.” EX1007; EX1008; EX1009. Petitioner has failed to identify what

in the art teaches this limitation with particularity.

Moreover, the Kravets application included Appendices with sample code

showing message handling for both the client (EX1007 at 3:45-55 (discussing

Appendix A)) and the predictive query server (EX1007 at 4:35-48 (discussing

Appendix B)). The appendices show that communication between the client and

server in Kravets is synchronous—the client requests a message by requesting and

waiting for a new “IFRAME” (essentially a web page embedded in another web

page—see also EX1007 at 3:50-55), and the predictive query server waits for a

request from the client using a “blocking” call, and responds after receiving the call.

EX2028 ¶96. That kind of lock step communication where the client and server wait

on each other is synchronous communication.

Petitioner also argues that “[i]n order to be presented ‘while the user is

providing the input but before the user finishes,’ th